Certification Trendz, Ltd. v. Tod Jackson
Claim Number: FA1101001368083
Complainant is Certification Trendz, Ltd. (“Complainant”), represented by Robert A. Auchter of McKool Smith, P.C., Washington D.C., USA. Respondent is Tod Jackson (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <test-king.org>, registered with GoDaddy.com, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 18, 2011; the National Arbitration Forum received payment on January 18, 2011.
On January 19, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <test-king.org> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On January 19, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 8, 2011 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@test-king.org. Also on January 19, 2011, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On February 10, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <test-king.org> domain name is confusingly similar to Complainant’s TEST KING mark.
2. Respondent does not have any rights or legitimate interests in the <test-king.org> domain name.
3. Respondent registered and used the <test-king.org> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Certification Trendz, Ltd., designs, markets, and sells computer software designed for test preparation in the field of information technology. Complainant operates its business under the TEST KING mark, which is registered with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,630,272 issued June 2, 2009).
Respondent, Tod Jackson, registered the <test-king.org> domain name on December 12, 2010. The disputed domain name resolves to a website selling practice tests and exam preparation materials that compete with Complainant.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Complainant has provided the evidence of its registration of the TEST KING mark with the USPTO (e.g., Reg. No. 3,630,272 issued June 2, 2009). The Panel finds that such evidence establishes rights in the mark and satisfies the requirements outlined in Policy ¶ 4(a)(i). The Panel bases its finding on previous determinations that registration of a mark with the USPTO is sufficient to establish rights in the mark. See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”); see also Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)).
Complainant alleges that Respondent’s <test-king.org> domain name is confusingly similar to Complainant’s TEST KING mark. Respondent uses Complainant’s entire mark and merely replaces the space between the terms of Complainant’s mark with a hyphen. Furthermore, Respondent added the generic top-level domain (“gTLD”) “.org” to Complainant’s mark. The Panel finds that removing spaces, inserting hyphens and adding a gTLD to an established mark fails to result in a domain name that falls outside the realm of confusing similarity with Complainant’s mark under Policy ¶ 4(a)(i). See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i); see also Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”); see also Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names. Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”).
The Panel finds Policy ¶ 4(a)(i) has been established.
Complainant asserts that Respondent does not have any rights or legitimate interests in the disputed domain name. Under Policy ¶ 4(a)(ii), the burden rests on Complainant to show that Respondent does not have rights or legitimate interests in the disputed domain name. Once Complainant has made a prima facie showing in support of its allegations, the burden shifts to Respondent to show that it has rights or legitimate interests in the disputed domain name pursuant to Policy 4(c). The Panel finds that Complainant has made a prima facie showing and because Respondent failed to make a timely response, the Panel may assume that Respondent lacks rights or legitimate interests in the <test-king.org> domain name. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”); see also Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004) (“Respondent’s failure to respond to the Complaint functions as an implicit admission that [Respondent] lacks rights and legitimate interests in the disputed domain name. It also allows the Panel to accept all reasonable allegations set forth…as true.”).
Complainant asserts that Respondent is not authorized by Complainant to use the TEST KING mark and that Respondent is not commonly known by the disputed domain name. The WHOIS information lists the registrant of the disputed domain name as “Tod Jackson,” which Complainant contends is not similar to the disputed domain name. After searching the record, and considering Complainant’s assertions, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
The disputed domain name resolves to a website offering services that compete with Complainant’s exam preparation business. Specifically, Respondent uses the <test-king.org> domain name to sell exam preparation and practice test materials. Complainant alleges that Respondent’s use of the domain name and resolving website competes with its business, which leads the Panel to find that such use is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(iii). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”); see also Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks).
The Panel finds Policy ¶ 4(a)(ii) has been established.
Complainant asserts that Respondent’s use of the disputed domain name and resolving website disrupts its business. The Panel finds that Respondent’s use of the <test-king.org> domain name to sell exam preparation and practice test materials that compete with Complainant disrupts Complainant’s business and is evidence of bad faith registration and use under Policy ¶ 4(b)(iii). See Surface Prot. Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the competitive relationship between the complainant and the respondent, the respondent likely registered the contested domain name with the intent to disrupt the complainant's business and create user confusion); see also Jerie v. Burian, FA 795430 (Nat. Arb. Forum Oct. 30, 2006) (concluding that the respondent registered and used the <sportlivescore.com> domain name in order to disrupt the complainant’s business under the LIVESCORE mark because the respondent was maintaining a website in direct competition with the complainant).
Lastly, Complainant contends that Respondent has intentionally attempted to attract, for commercial gain, unsuspecting Internet users to Respondent’s domain name and resolving website by creating a likelihood of confusion with Complainant’s mark. Furthermore, Complainant contends that Internet users will become confused as to Complainant’s sponsorship and affiliation with the resolving website and exam materials that are being sold as a result of Respondent’s use of Complainant’s mark in the confusingly similar domain name. The Panel concludes that Respondent’s use of the disputed domain name is evidence of bad faith registration and use under Policy ¶ 4(b)(iv). See Dell Inc. v. Innervision Web Solutions, FA 445601 (Nat. Arb. Forum May 23, 2005) (finding evidence of bad faith under Policy ¶ 4(b)(iv) where the respondent was using the <dellcomputerssuck.com> domain name to divert Internet users to respondent’s website offering competing computer products and services); see also Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting).
The Panel finds Policy ¶ 4(a)(iii) has been established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <test-king.org> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: February 23, 2011
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